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Author Topic: Summary vs Description  (Read 485 times)

dsplatonov

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Summary vs Description
« on: 06-09-11 at 03:20 am »

Hello.
I'm new to patent drafting. Currently i draft my first application and here is question.
Section "Detailed description of invention" - A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. I founded, that description of the preferred embodiments is described in Summary Section (for example, patent #7,907,052, 7,829,774 etc). But in Summary section there must be written "A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages
of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention)."
instead of description of preferred embodiments.
Description section contains a description of embodiments, but with numbers from images.
That is all difference between this 2 sections? Why attorneys write a list of embodiments in summary section?

Thanks in advance.
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khazzah

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Re: Summary vs Description
« Reply #1 on: 06-09-11 at 07:35 am »

That is all difference between this 2 sections [detailed description and summary]?

Generally, you put all the details in the Detailed Description. This section is by far the longest section, and describes how the invention operates and/or is made *in detail* by describing the figures. In contrast, the Summary is a summary, so it describes the invention at a high level without going into too much detail. 

Why attorneys write a list of embodiments in summary section?

I'll let someone else tackle this one.
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Karen Hazzah
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Information provided in this post is not legal advice and does not create any attorney-client relationship.

dsplatonov

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Re: Summary vs Description
« Reply #2 on: 06-10-11 at 05:14 am »

So, as far as i understand, i don't need to write about embodiments in summary section. Right?
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khazzah

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Re: Summary vs Description
« Reply #3 on: 06-10-11 at 09:32 am »

So, as far as i understand, i don't need to write about embodiments in summary section. Right?

Right.

There are no *specific* requirements for the content of the summary section. In fact, many patent practitioners file without a summary section.
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Karen Hazzah
Patent Prosecution Blog
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Information provided in this post is not legal advice and does not create any attorney-client relationship.

patentsusa

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Re: Summary vs Description
« Reply #4 on: 06-27-11 at 12:22 pm »

If you are filing in the U.S. only, you could skip the Summary altogether.  If the application will eventually be filed in Canada, the UK or Europe, I like to copy broad independent claims or things I may want to claim at some point, so there will be no question of support.  Or sometimes I use a Summary as a place to put claims that I may want to use later but don't want to pay claims fees for now if I already have a large number of claims.

I am of the view that it is best to draft the claims first, then write the rest of the application based on the claims.

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Deepak Malhotra, JD, BSEE, Patent Attorney
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